1. The Working Group on the Legal Development of the Madrid System for the International Registration of Marks (hereinafter referred to as "the Working Group") met in Geneva from October 7 to 11, 2024.
2. The list of participants is contained in document MM/LD/WG/22/INF/1.
AGENDA ITEM 1: OPENING OF THE SESSION
3. Ms. Wang Binying, Deputy Director General, Brands and Designs Sector, World Intellectual Property Organization (WIPO), opened the session and welcomed the participants.
4. Mr. Dustyn Taylor (Australia), Vice-Chair of the Working Group, acted as Chair. After his departure, Ms. Elizabeth Jones (United Kingdom) was elected Acting Chair for the remainder of the meeting.
5. Ms. Debbie Roenning acted as Secretary to the Working Group.
AGENDA ITEM 2: ADOPTION OF THE AGENDA
6. The Working Group adopted the draft Agenda (document MM/LD/WG/22/1 Prov.5).
AGENDA ITEM 3: ELECTION OF THE CHAIR AND TWO VICE-CHAIRS FOR MM/LD/WG/23
7. The Working Group elected, for the twenty-third session of the Working Group, Ms. Gabriela Alejandra Alegría Troncoso (Chile) as Chair, and Ms. Natalia Mogol (Republic of Moldova) as Vice-Chair.
AGENDA ITEM 4: E-MAIL ADDRESS AS A REQUIRED INDICATION FOR SELECTED REQUESTS FOR RECORDING
8. Discussions were based on documents MM/LD/WG/22/2 and MM/LD/WG/22/2 Corr.*
9. The Working Group agreed to recommend to the Madrid Union Assembly the adoption of the proposed amendments to Rules 3, 20bis, 24 and 25 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, as contained in the Annex to document MM/LD/WG/22/2, and as set out in Annex I to the present document, with November 1, 2025, as their date of entry into force.
AGENDA ITEM 5: RECALCULATION OF THE AMOUNTS OF THE INDIVIDUAL FEES IN SWISS FRANCS
10. Discussions were based on document MM/LD/WG/22/3.
11. The Working Group agreed to:
- (i) recommend to the Madrid Union Assembly the adoption of the proposed amendments to Rule 35(2)(c) and (d) and the adoption of new subparagraph (e) of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, as amended by the Working Group, and as set out in Annex II to the present document, with November 1, 2025, as their date of entry into force;
- (ii) monitor the application of the above-mentioned Rule to assess its possible impact on Contracting Parties and users.
AGENDA ITEM 6: PROPOSAL BY THE DELEGATION OF THE REPUBLIC OF MOLDOVA
12. Discussions were based on document MM/LD/WG/22/4.
13. The Working Group agreed to continue, at its twenty-third session, discussions on the proposal by the Delegation of the Republic of Moldova contained in document MM/LD/WG/22/4.
AGENDA ITEM 7: DEPENDENCY
14. Discussions were based on documents MM/LD/WG/20/5, MM/LD/WG/21/8 Rev.2, MM/LD/WG/22/5 Rev. and MM/LD/WG/22/14.
15. The Working Group agreed to:
- (i) continue discussing dependency, based on the documents referred to in paragraph 14, above;
- (ii) request the International Bureau to conduct a survey among Offices of Contracting Parties and users of the Madrid System on:
- (a) the incidence of bad faith in the Madrid System and the use of central attack in respect thereof;
- (b) other grounds invoked to request the cancellation of an international registration due to the ceasing of effect of its basic mark; and,
- (iii) conduct intersessional informal consultations with interested members and observers to discuss the various proposals contained in the documents referred to in paragraph 14, above, and other relevant issues with a view to identify possible elements of convergence.
AGENDA ITEM 8: THE POSSIBLE INTRODUCTION OF NEW LANGUAGES
16. Discussions were based on documents MM/LD/WG/16/7, MM/LD/WG/16/9 Rev., MM/LD/WG/17/10, MM/LD/WG/21/7, MM/LD/WG/22/6 Rev., MM/LD/WG/22/7, MM/LD/WG/22/8, MM/LD/WG/22/9, MM/LD/WG/22/10, MM/LD/WG/22/11, MM/LD/WG/22/12, and MM/LD/WG/22/13 Rev.
17. The Working Group recalled the proposals for the introduction of Chinese, Russian and Arabic as Madrid System languages contained in documents MM/LD/WG/16/7, MM/LD/WG/16/9 Rev. and MM/LD/WG/17/10, and acknowledged the work undertaken and the progress achieved so far on the basis of documents MM/LD/WG/17/7 Rev., MM/LD/WG/18/5, MM/LD/WG/18/5 Corr., MM/LD/WG/19/7 and MM/LD/WG/20/7. The Working Group took note of the new proposals by the Delegations of Japan, Brazil, Cabo Verde, Mozambique, Portugal, Sao Tome and Principe, and Germany, contained in documents MM/LD/WG/22/10, MM/LD/WG/22/11 and MM/LD/WG/22/12, concerning the introduction of Japanese, Portuguese and German into the Madrid System.
18. The Working Group agreed to:
- (i) in the spirit of promoting multilingualism in the Madrid System, continue discussions on the possible introduction of new Madrid System languages, including Chinese, Russian, Arabic, Japanese, Portuguese and German, based on the criteria outlined in document MM/LD/WG/21/7, and on the updated statistics concerning document MM/LD/WG/22/6 Rev., as requested in subparagraph (ii), below;
- (ii) request that the International Bureau prepare, for its twenty-third session, documents providing
- – updated statistics concerning document MM/LD/WG/22/6 Rev.,
- – cost estimates for the possible enhancement of the Terminology Database, presented in paragraphs 36 to 39 of document MM/LD/WG/22/7, updated to include Japanese, Portuguese and German, and to provide updated data on Chinese, Russian and Arabic, and
- – a more detailed explanation of the Unified Terminology Database referred to in paragraphs 43, 44 and 45 of document MM/LD/WG/22/7;
- (iii) the introduction of a differentiated translation practice, as described in paragraphs 13 to 18 of document MM/LD/WG/22/9, and requested that the International Bureau
- – monitor the implementation of this new practice with a view to ensure that the necessary translation quality levels are maintained, and
- – provide, at future sessions, data on the accuracy of the machine-translation tools used in the aforesaid implementation;
- (iv) invite Contracting Parties, other WIPO Member States and users' organizations to submit to the International Bureau comments on the proposal by the Delegations of Brazil, Cabo Verde, Germany, Japan, Mozambique, the Republic of Korea, Portugal and Sao Tome and Principe contained in document MM/LD/WG/22/13 Rev.;
- (v) request that the International Bureau prepare, for its twenty-third session, a technical assessment of the possible implementation of the "international registration language option" contained in document MM/LD/WG/22/13 Rev., and to continue discussions on the "international registration language option" at its twenty-third session; and,
- (vi) request that the International Bureau conduct intersessional technical consultations with Contracting Parties, other WIPO Member States and users' organizations on all of the above, where useful.
AGENDA ITEM 9: MADRID WORKING GROUP ROUNDTABLE
19. The International Bureau presented the latest developments in the Madrid Registry.
AGENDA ITEM 10: SUMMARY BY THE ACTING CHAIR
20. The Working Group approved the Summary by the Acting Chair, as contained in the present document.
AGENDA ITEM 11: CLOSING OF THE SESSION
21. The Acting Chair closed the session on October 11, 2024.
[Annexes follow]
ANNEX I: PROPOSED AMENDMENTS TO THE REGULATIONS UNDER THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
as in force on November 1, 20242025
[…]
Rule 3
Representation Before the International Bureau
[…]
(2) [Appointment of the Representative]
(a) The appointment of a representative may be made in the international application or by the new holder of the international registration in a request under Rule 25(1)(a)(i) and shall indicate the name and address, given in accordance with the Administrative Instructions, and the electronic mail addresses of the representative and of the applicant or holder where the electronic mail address of the applicant or holder was not indicated in the international application or in a previous request for recording.
[…]
Rule 20bis
Licenses
(1) [Request for the Recording of a License]
(a) A request for the recording of a license shall be presented to the International Bureau on the relevant official form by the holder or, if the Office admits such presentation, by the Office of the Contracting Party of the holder or the Office of a Contracting Party with respect to which the license is granted.
(b) The request shall indicate
(i) the number of the international registration concerned,
(ii) the name of the holder,
(iii) the name and address of the licensee, given in accordance with the Administrative Instructions, and the electronic mail address of the licensee,
(iv) the designated Contracting Parties with respect to which the license is granted,
(v) that the license is granted for all the goods and services covered by the international registration, or the goods and services for which the license is granted, grouped in the appropriate classes of the International Classification of Goods and Services.,
(vi) the electronic mail address of the holder where this address was not indicated in the international application or in a previous request for recording,
(vii) the electronic mail address of the representative, if any, where this address was not indicated in the request for the recording of the appointment of the representative as such.
(c) The request may also indicate
(i) where the licensee is a natural person, the State of which the licensee is a national,
(ii) where the licensee is a legal entity, the legal nature of that entity and the State and, where applicable, the territorial unit within that State, under the law of which the said legal entity has been organized,
(iii) that the license concerns only a part of the territory of a specified designated Contracting Party,
(iv) where the licensee has a representative, the name and address of the representative, given in accordance with the Administrative Instructions, and the electronic mail address of the representative,
(v) where the license is an exclusive license or a sole license, that fact,
(vi) where applicable, the duration of the license.
(d) The request shall be signed by the holder or by the Office through which it is presented.
(2) [Irregular Request]
(a) If the request for the recording of a license does not comply with the requirements of paragraph (1)(a), (b) and (d), the International Bureau shall notify that fact to the holder, the licensee or the representative of the licensee, if any, and, if the request was presented by an Office, to that Office.
(b) If the irregularity is not remedied within three months from the date of the notification of the irregularity by the International Bureau, the request shall be considered abandoned, and the International Bureau shall notify accordingly and at the same time the holder, the licensee or the representative of the licensee, if any, and, if the request was presented by an Office, that Office, and refund any fees paid, after deduction of an amount corresponding to one-half of the relevant fees referred to in item 7 of the Schedule of Fees, to the party having paid those fees.
(3) [Recording and Notification]
(a) Where the request complies with the requirements of paragraph (1)(a), (b) and (d), the International Bureau shall record the license in the International Register, together with the information contained in the request, shall notify accordingly the Offices of the designated Contracting Parties in respect of which the license is granted and shall inform at the same time the holder, the licensee or the representative of the licensee, if any, and, if the request was presented by an Office, that Office.
(b) The license shall be recorded as of the date of receipt by the International Bureau of a request complying with the applicable requirements.
(c) Notwithstanding subparagraph (b), where continued processing has been recorded under Rule 5bis, the license shall be recorded in the International Register as of the date of expiry of the time limit specified in paragraph (2)(b).
(4) [Amendment or Cancellation of the Recording of a License] Paragraphs (1) to (3) shall apply mutatis mutandis to a request for the amendment or cancellation of the recording of a license.
(5) [Declaration that the Recording of a Given License Has No Effect]
(a) The Office of a designated Contracting Party which is notified by the International Bureau of the recording of a license in respect of that Contracting Party may declare that such recording has no effect in the said Contracting Party.
(b) The declaration referred to in subparagraph (a) shall indicate
(i) the reasons for which the recording of the license has no effect,
(ii) where the declaration does not affect all the goods and services to which the license relates, those which are affected by the declaration or those which are not affected by the declaration,
(iii) the corresponding essential provisions of the law, and
(iv) whether such declaration may be subject to review or appeal.
(c) The declaration referred to in subparagraph (a) shall be sent to the International Bureau before the expiry of 18 months from the date on which the notification referred to in paragraph (3) was sent to the Office concerned.
(d) The International Bureau shall record in the International Register any declaration made in accordance with subparagraph (c) and shall notify accordingly the party (holder or Office) that presented the request to record the license and the licensee or the representative of the licensee, if any. The declaration shall be recorded as of the date of receipt by the International Bureau of a communication complying with the applicable requirements.
(e) Any final decision relating to a declaration made in accordance with subparagraph (c) shall be notified to the International Bureau which shall record it in the International Register and notify accordingly the party (holder or Office) that presented the request to record the license and the licensee or the representative of the licensee, if any.
[…]
Rule 24
Designation Subsequent to the International Registration
(1) [Entitlement]
(a) A Contracting Party may be the subject of a designation made subsequent to the international registration (hereinafter referred to as "subsequent designation") where, at the time of that designation, the holder fulfills the conditions under Article 2 of the Protocol to be the holder of an international registration.
(b) [Deleted]
(c) [Deleted]
(2) [Presentation; Form and Signature]
(a) A subsequent designation shall be presented to the International Bureau by the holder or by the Office of the Contracting Party of the holder; however,
(i) [Deleted]
(ii) [Deleted]
(iii) where paragraph (7) applies, the subsequent designation resulting from conversion must be presented by the Office of the Contracting Organization.
(b) The subsequent designation shall be presented on the official form. Where it is presented by the holder, it shall be signed by the holder. Where it is presented by an Office, it shall be signed by that Office and, where the Office so requires, also by the holder. Where it is presented by an Office and that Office, without requiring that the holder also sign it, allows that the holder also sign it, the holder may do so.
(3) [Contents]
(a) Subject to paragraph (7)(b), the subsequent designation shall contain or indicate
(i) the number of the international registration concerned,
(ii) the name of the holder,
(iii) the Contracting Party that is designated,
(iv) where the subsequent designation is for all the goods and services listed in the international registration concerned, that fact, or, where the subsequent designation is for only part of the goods and services listed in the international registration concerned, those goods and services,
(v) the amount of the fees being paid and the method of payment, or instructions to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions, and,
(vi) where the subsequent designation is presented by an Office, the date on which it was received by that Office.,
(vii) the electronic mail address of the holder where this address was not indicated in the international application or in a previous request for recording, and,
(viii) the electronic mail address of the representative, if any, where this address was not indicated in the request for the recording of the appointment of the representative as such.
[…]
Rule 25
Request for Recording
(1) [Presentation of the Request]
(a) A request for recording shall be presented to the International Bureau on the relevant official form where the request relates to any of the following:
(i) a change in the ownership of the international registration in respect of all or some of the goods and services and all or some of the designated Contracting Parties;
(ii) a limitation of the list of goods and services in respect of all or some of the designated Contracting Parties;
(iii) a renunciation in respect of some of the designated Contracting Parties for all the goods and services;
(iv) a change in the name or address of the holder or, where the holder is a legal entity, an introduction of or a change in the indications concerning the legal nature of the holder and the State and, where applicable, the territorial unit within that State under the law of which the said legal entity has been organized;
(v) cancellation of the international registration in respect of all the designated Contracting Parties for all or some of the goods and services;
(vi) a change in the name or address of the representative.
(b) The request shall be presented by the holder or by the Office of the Contracting Party of the holder; however, the request for the recording of a change in ownership may be presented through the Office of the Contracting Party, or of one of the Contracting Parties, indicated in the said request in accordance with paragraph (2)(a)(iv).
(c) [Deleted]
(d) Where the request is presented by the holder, it shall be signed by the holder. Where it is presented by an Office, it shall be signed by that Office and, where the Office so requires, also by the holder. Where it is presented by an Office and that Office, without requiring that the holder also sign it, allows that the holder also sign it, the holder may do so.
(2) [Contents of the Request]
(a) A request under paragraph (1)(a) shall, in addition to the requested recording, contain or indicate
(i) the number of the international registration concerned,
(ii) the name of the holder or the name of the representative where the change relates to the name or address of the representative,
(iii) in the case of a change in the ownership of the international registration, the name and address, given in accordance with the Administrative Instructions, and the electronic mail address of the natural person or legal entity mentioned in the request as the new holder of the international registration (hereinafter referred to as "the transferee"),
(iv) in the case of a change in the ownership of the international registration, the Contracting Party or Parties in respect of which the transferee fulfills the conditions under Article 2 of the Protocol to be the holder of an international registration,
(v) in the case of a change in the ownership of the international registration, where the address of the transferee given in accordance with item (iii) is not in the territory of the Contracting Party, or of one of the Contracting Parties, given in accordance with item (iv), and unless the transferee has indicated to be a national of a Contracting State or of a State member of a Contracting Organization, the address of the establishment, or the domicile, of the transferee in the Contracting Party, or in one of the Contracting Parties, in respect of which the transferee fulfills the conditions to be the holder of an international registration,
(vi) in the case of a change in the ownership of the international registration that does not relate to all the goods and services and to all the designated Contracting Parties, the goods and services and the designated Contracting Parties to which the change in ownership relates, and
(vii) the amount of the fees being paid and the method of payment, or instructions to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions.,
(viii) the electronic mail address of the holder where this address was not indicated in the international application or in a previous request for recording,
(ix) the electronic mail address of the representative, if any, where this address was not indicated in the request for the recording of the appointment of the representative as such.
[Annex II follows]
ANNEX II: PROPOSED AMENDMENTS TO THE REGULATIONS UNDER THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
as in force on November 1, 20242025
[…]
Rule 35
Currency of Payments
(1) [Obligation to Use Swiss Currency] All payments due under these Regulations shall be made to the International Bureau in Swiss currency irrespective of the fact that, where the fees are paid by an Office, that Office may have collected those fees in another currency.
(2) [Establishment of the Amount of Individual Fees in Swiss Currency]
(a) Where a Contracting Party makes a declaration under Article 8(7)(a) of the Protocol that it wants to receive an individual fee, the amount of the individual fee indicated to the International Bureau shall be expressed in the currency used by its Office.
(b) Where the fee is indicated in the declaration referred to in subparagraph (a) in a currency other than Swiss currency, the Director General shall, after consultation with the Office of the Contracting Party concerned, establish the amount of the individual fee in Swiss currency on the basis of the official exchange rate of the United Nations.
(c) Where, for more than three consecutive months, the official exchange rate of the United Nations between the Swiss currency and the other currency in which the amount of an individual fee has been indicated by a Contracting Party is higher or lower by at least 5% than the last exchange rate applied to establish the amount of the individual fee in Swiss currency, the Office of that Contracting Party may ask the Director General to establish a new amount of the individual fee in Swiss currency according to the official exchange rate of the United Nations prevailing on the day preceding the day on which the request is made. The Director General shall proceed accordingly. The new amount shall be applicable as from a date which shall be fixed by the Director General, provided that such date is between one and two months after the date of the publication of the said amount in the Gazette.
(d) Where, for more than three consecutive months, the official exchange rate of the United Nations between the Swiss currency and the other currency in which the amount of an individual fee has been indicated by a Contracting Party is lower by at least 105% than the last exchange rate applied to establish the amount of the individual fee in Swiss currency, the Director General shall establish a new amount of the individual fee in Swiss currency according to the current official exchange rate of the United Nations. The new amount shall be applicable as from a date which shall be fixed by the Director General, provided that such date is between one and two months after the date of the publication of the said amount in the Gazette.
(e) Where the conditions specified in subparagraph (c), above, are met, the International Bureau shall inform the Office of the Contracting Party concerned accordingly.